Ex Parte Ryan

Board of Patent Appeals and Interferences

Apr 10, 2012

10941539 (B.P.A.I. Apr. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FREDERICK W. RYAN JR.
____________

Appeal 2010-011914
Application 10/941,539
Technology Center 3600
____________

Before: ANTON W. FETTING, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal from the rejection of claims 1-29. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002).
The claimed invention is directed to a fraud detection mechanism
adapted for inconsistent data collection (Spec. para. [0002]). Claim 1,
reproduced below, is further illustrative of the claimed subject matter (some
bracketed numbering has been added).
1. In a verification system including a processing
device, the verification system having items intended for a
single use, in which usage of an item is confirmed by scanning
an identification number associated with the item, and wherein
scanning activity is inconsistent, a method for identifying
possible fraudulent use of the identification numbers by a user
comprising:
[1] creating, by the processing device, a profile of
scanning activity for a plurality of items that meet a first
parameter, the profile including data related to multiple
scanning rates for items that meet the first parameter;
[2] creating, by the processing device, a profile of
scanning activity for a plurality of items used by a specified
user, the profile including data related to multiple scanning
rates for items used by the specified user;
[3] determining, by the processing device, that a multiple
scanning rate from the profile of scanning activity for the
plurality of items used by the specified user is greater than a
first threshold value, the first threshold value being based on a
corresponding multiple scanning rate from the profile of
scanning activity for the plurality of items that meet the first
parameter; and
[4] identifying, by the processing device, the specified
user as a suspect for possible fraudulent use of the identification
numbers.

Claims 1-9, 12-22, and 25-29 stand rejected under 35 U.S.C. § 103(a)
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as unpatentable over Gordon US 6,527,178 B1, iss. Mar. 4, 2003) in view of
Matsumori (US 6,854,656 B2, iss. Feb. 15, 2005); and claims 10-11 and 23-
24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gordon in
view of Official Notice.
We AFFIRM.

FINDINGS OF FACT
We adopt the Examiner’s findings of fact concerning Gordon and
Matsumori, as set forth on pages 3-5 and 10-12 of the Examiner’s Answer.

ANALYSIS
We are not persuaded the Examiner erred in asserting that a
combination of Gordon and Matsumori renders obvious independent claim
11 (App. Br. 3-6). Gordon discloses that the postal authority maintains a
database of all postage indicia (col. 2, ll. 48-51; col. 3, ll. 17-19; col. 8, ll.
64-66), and whether or not they have already been scanned, for example,
either by direct comparison or using occurrence flags (col. 3, ll. 21-25; col.
8, ll. 10-22, 53-63; col. 8, l. 63 through col. 9, l. 6). This corresponds to
aspect [1] of independent claim 1.
Gordon further discloses that postage indicia can be grouped by
specific mailers/recipients (col. 6, ll. 1-6; col. 7, ll. 23-28; col. 8, ll. 17-21).
This corresponds to aspect [2] of independent claim 1.
Gordon additionally discloses determining whether specific
mailers/recipients have attempted to use the same postage indicia multiple

1 We choose independent claim 1 as representative of claims 1-9, 12-22, and
25-29. See 37 C.F.R. § 41.37(c)(1)(vii).
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times, for example, either by direct comparison or using occurrence flags
(col. 7, ll. 20-28; col. 8, ll. 15-23, 32-41). This corresponds to aspect [3] of
independent claim 1.
Gordon finally discloses identifying those specific mailers/recipients
(col. 7, ll. 20-28; col. 8, ll. 15-23, 32-41). This corresponds to aspect [4] of
independent claim 1.
Appellant asserts that
in the system in Gordon, if an indicium is scanned more than
once, it will be identified as containing counterfeit indicia. This
system in Gordon will work well assuming that the scanning
activity is consistent, i.e., each mail piece is actually only
scanned once. However, if for some reason the same mail piece
is scanned more than once, the system in Gordon will
improperly identify the mail piece as containing counterfeit
indicia

(App. Br. 6). Initially, we note that independent claim 1 recites “identifying,
by the processing device, the specified user as a suspect for possible
fraudulent use of the identification numbers” (emphasis added).
Accordingly, like the claimed invention, Gordon’s identification merely
identifies the possibility of counterfeit indicia. Moreover, column 8, lines
15-46 of Gordon discloses the use of occurrence flags and “expected”
address comparisons to guard against such false positives.
Appellant sets forth various problems that are solved by the claimed
invention (App. Br. 5, 8, 12, 14). First of all, none of these problems are set
forth in the claims. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d
1225, 1231 (Fed. Cir. 2005) (while the specification can be examined for
proper context of a claim term, limitations from the specification will not be
imported into the claims). Moreover, if the combination of prior art
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references renders obvious each aspect of the claimed invention, then the
combination of prior art references also solves the same problems solved by
the claimed invention.
Appellant asserts that
[t]he system in Gordon simply scans each mail piece and stores
the transaction or serial number. Creating a profile of scanning
activity is not simply scanning every mail piece that is being
sorted. As clearly stated in the claim, the profile includes data
related to multiple scanning rates for items that meet the first
parameter… [t]he system in Gordon does not in any manner
analyze scanning activity as is done in the present invention,
and therefore does not create or utilize any type of profile of
scanning activity

(App. Br. 10). First of all, “analyz[ing] scanning activity” is not set forth in
aspect [1]. See CollegeNet, Inc., 418 F.3d at 1231. Moreover, Gordon
discloses determining whether a postage indicia has been scanned multiple
times (col. 3, ll. 21-26; col. 8, ll. 15-21), and since “the first parameter” is
not defined in the Specification, it is broad enough to include the occurrence
flags of Gordon (col. 8, ll. 15-41), or even the mere existence of the postage
indicia in the database. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) (“[d]uring examination [of a patent application,
a pending claim is] given [the] broadest reasonable [construction] consistent
with the specification, and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art”)
(internal citation and quotations omitted).
Appellant further asserts that
[t]he system in Gordon does not create any type of profile of
scanning activity for any items. Simply scanning each mail
piece is not the same as creating a profile of scanning activity as
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is done in the present invention

(App. Br. 11). Initially, we note that Matsumori is cited for disclosing a
profile (Exam’r’s Ans. 4-5, 11-12). See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (the argument that a single reference alone does not
disclose the recited claimed steps is not persuasive because nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures); In re
Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-obviousness
by attacking references individually where, as here, the rejections are based
on combinations of references”). Moreover, as there is no definition of
“profile” set forth in the Specification, the grouping of postage indicia by
specific mailers/recipients (col. 6, ll. 1-6; col. 7, ll. 23-28; col. 8, ll. 17-21) is
sufficient to meet a broadest reasonable construction of “profile.” See In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364.
Appellant asserts that
[t]he system in Gordon does not utilize any type of scanning
rate from any type of profile. The system in Gordon simply
determines if an indicium has been previously scanned. This is
simply not the same

(App. Br. 12). However, neither the claims nor the Specification provide
any temporal limits on scanning rate. See CollegeNet, Inc., 418 F.3d at
1231. Accordingly, Gordon’s determination of previous scanning meets a
broadest reasonable construction of “scanning rate.” See In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d at 1364. Additionally, Matsumori discloses
accounting for time periods between first and second scanning activities
(col. 1, ll. 49-55; col. 2, ll. 30-36; col. 6, ll. 51-67; col. 7, ll. 30-54).
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Appellant asserts that
the system in Matsumori is not in any way related to identifying
possible fraudulent use of the identification numbers by a user
in a verification system. Matsumori is not concerned with
possible fraudulent re-use of the UPC codes that are scanned by
shoppers

(App. Br. 13-14). However, Gordon is cited for these aspects (Exam’r’s
Ans. 3-5 and 10-12). See In re Merck & Co., 800 F.2d at 1097.
Appellant further asserts that Matsumori does not disclose aspects [1]-
[4] of independent claim 1 (App. Br. 14). However, it is the combination of
Gordon and Matsumori that is cited for rendering obvious these aspects
(Exam’r’s Ans. 3-5 and 10-12). See In re Merck & Co., 800 F.2d at 1097.
Appellant additionally asserts that “modifying Gordon to disable the
scanners based on a user profile [as disclosed in Matsumori] will, for all
practical purposes, render the system of Gordon inoperable” (App. Br. 15).
However, “[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference . . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” See In
re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Nievelt, 482 F.2d 965, 968
(CCPA 1973). Here, the Examiner is merely asserting that a user profile in
Gordon may take into account the scanning rates in Matsumori (Exam’r’s
Ans. 4-5, 11-12). Moreover, the time period during which the scanner is
disabled depends on the user profile, and thus would presumably be
relatively short in Gordon’s system for the reasons identified by Appellant.
And even if we were to take Appellant’s contentions at face value, the result
would merely be a slower system in Gordon. While such a system may not
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be ideal, it would nevertheless be known, and certainly not be inoperative.

DECISION
The decision of the Examiner to reject claims 1-29 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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